2905.01 Filing Through the USPTO as an Office of Indirect Filing [R-07.2015]

35 U.S.C. 382 Filing international design applications.

(a) IN GENERAL.—Any person who is a national of the United States, or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States, may file an international design application by submitting to the Patent and Trademark Office an application in such form, together with such fees, as may be prescribed by the Director.

(b) REQUIRED ACTION.—The Patent and Trademark Office shall perform all acts connected with the discharge of its duties under the treaty, including the collection of international fees and transmittal thereof to the International Bureau. Subject to chapter 17, international design applications shall be forwarded by the Patent and Trademark Office to the International Bureau, upon payment of a transmittal fee.

(c) APPLICABILITY OF CHAPTER 16.—Except as otherwise provided in this chapter, the provisions of chapter 16 shall apply.

(d) APPLICATION FILED IN ANOTHER COUNTRY.—An international design application on an industrial design made in this country shall be considered to constitute the filing of an application in a foreign country within the meaning of chapter 17 if the international design application is filed—

(1) in a country other than the United States;

(2) at the International Bureau; or

(3) with an intergovernmental organization.

37 C.F.R. 1.1002 The United States Patent and Trademark Office as an office of indirect filing.

(a) The United States Patent and Trademark Office, as an office of indirect filing, shall accept international design applications where the applicant’s Contracting Party is the United States.

(b) The major functions of the United States Patent and Trademark Office as an office of indirect filing include:

(1) Receiving and according a receipt date to international design applications;

(2) Collecting and, when required, transmitting fees due for processing international design applications;

(3) Determining compliance with applicable requirements of part 5 of this chapter; and

(4) Transmitting an international design application to the International Bureau, unless prescriptions concerning national security prevent the application from being transmitted.

37 C.F.R. 1.1011 Applicant for international design application.

(a) Only persons who are nationals of the United States or who have a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the territory of the United States may file international design applications through the United States Patent and Trademark Office.

(b) Although the United States Patent and Trademark Office will accept international design applications filed by any person referred to in paragraph (a) of this section, an international design application designating the United States may be refused by the Office as a designated office if the applicant is not a person qualified under 35 U.S.C. chapter 11 to be an applicant.

37 C.F.R. 1.1012 Applicant’s Contracting Party.

In order to file an international design application through the United States Patent and Trademark Office as an office of indirect filing, the United States must be applicant’s Contracting Party (Articles 4 and 1(xiv)).

37 C.F.R. 1.1045 Procedures for transmittal of international design application to the International Bureau.

(a) Subject to paragraph (b) of this section and payment of the transmittal fee set forth in § 1.1031(a), transmittal of the international design application to the International Bureau shall be made by the Office as provided by Rule 13(1). At the same time as it transmits the international design application to the International Bureau, the Office shall notify the International Bureau of the date on which it received the application. The Office shall also notify the applicant of the date on which it received the application and of the transmittal of the international design application to the International Bureau.

(b) No copy of an international design application may be transmitted to the International Bureau, a foreign designated office, or other foreign authority by the Office or the applicant, unless the applicable requirements of part 5 of this chapter have been satisfied.

(c) Once transmittal of the international design application has been effected under paragraph (a) of this section, except for matters properly before the United States Patent and Trademark Office as an office of indirect filing or as a designated office, all further correspondence concerning the application should be sent directly to the International Bureau. The United States Patent and Trademark Office will generally not forward communications to the International Bureau received after transmittal of the application to the International Bureau. Any reply to an invitation sent to the applicant by the International Bureau must be filed directly with the International Bureau, and not with the Office, to avoid abandonment or other loss of rights under Article 8.

Only persons who are nationals of the United States or who have a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States may file international design applications through the USPTO. See 35 U.S.C. 382(a) and 37 CFR 1.1011(a). In addition, in order to file an international design application through the USPTO, the United States must be applicant’s Contracting Party. See 37 CFR 1.1012 and Hague Agreement Article 4. Thus, an international design application may be filed through the USPTO only if: (1) the applicant, or each applicant if there is more than one applicant, is a national of the United States or has a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the United States; and (2) the United States is the applicant’s Contracting Party, or each applicant’s Contracting Party if there is more than one applicant.

The official form for presenting the international design application, "Application for International Registration" (form DM/1), includes boxes to indicate both applicant’s entitlement to file the international design application and applicant’s Contracting Party. See MPEP § 2909.01.

International design applications may be filed through the USPTO as an office of indirect filing via EFS-Web, mail, or hand delivery to the Customer Service Window at the USPTO’s Alexandria headquarters. The street address is: U.S. Patent and Trademark Office, Customer Service Window, Randolph Building, 401 Dulany Street, Alexandria, VA 22314. The mailing address for delivery by the U.S. Postal Service is: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450. It should be noted that the Priority Mail Express® provisions of 37 CFR 1.10 apply to the filing of all applications and papers filed in the U.S. Patent and Trademark Office, including international design applications and related papers and fees. It should be further noted, however, that the filing of an international design application is excluded from the Certificate of Mailing or Transmission procedures under 37 CFR 1.8. Facsimile transmission may not be used for the filing of an international design application or the filing of color drawings under 37 CFR 1.1026. See 37 CFR 1.6(d)(3) and (4), 37 CFR 1.8(a)(2)(i)(K). See MPEP § 502 for more information on depositing correspondence with the USPTO.

Payment of the transmittal fee specified in 37 CFR 1.1031(a) is required for international design applications filed through the USPTO as an office of indirect filing. In addition, international design applications filed with the USPTO are subject to national security review. See 35 U.S.C. 382(b). The international design application will not be transmitted to the International Bureau if the transmittal fee has not been paid or the necessary national security clearance has not been obtained. See 37 CFR 1.1045.

Upon receipt of an international design application, the USPTO will review the application for the required indications establishing each applicant’s entitlement to file the international design application through the USPTO, payment of the transmittal fee, and national security. If the indications are not sufficient to establish each applicant’s entitlement to file the international design application through the USPTO, the transmittal fee has not been paid, or the necessary national security clearance has not been obtained, the Office will notify the applicant accordingly via Form PTO-2320, "Notification Of Receipt And Transmittal Of The International Design Application To The IB And Invitation To Pay Fee." Form PTO-2320 does not set a time period to cure the deficiency but instead warns the applicant that an international design application that is not received by the International Bureau within six months from receipt of the application by the USPTO will receive a filing date as of the date on which the International Bureau receives the application, rather than the USPTO receipt date, subject to Hague Agreement Rule 14(2).

If the conditions for transmitting the international design application to the International Bureau have been satisfied, the application will be transmitted to the International Bureau. The applicant will be notified via Form PTO-2320 of the transmittal of the application to the International Bureau and of the receipt date of the international design application by the USPTO.

The Office will generally not forward any submission filed in an international design application to the International Bureau that is received after the application has been transmitted to the International Bureau. Applicants are cautioned that any reply to an invitation sent to the applicant by the International Bureau must be filed directly with the International Bureau, and not with the Office, to avoid abandonment or other loss of rights under Hague Agreement Article 8. See 37 CFR 1.1045(c).